Talks about NFTs and the Metaverse at the Trademark Law Conference – WWD

WASHINGTON DC. At this year’s International Trademark Association conference, held from April 30 to May 4 in the country’s capital, intellectual property lawyers from around the world, including war -torn Ukraine, met to discuss various issues. legally affecting trademarks, from the new law to the NFT. and the metaverse, customs protection and counterfeiting.

Barbara Kolsun, a leading lawyer in the New York fashion industry and director of the Cardozo School of Law’s FAME Center (Fashion, Arts, Media and Entertainment), was at INTA to participate in a panel on the continuation of fashion in New York. York and social responsibility. Law. The bill, initiated by Democratic Senator Alessandra Biaggi, is in committee. If passed, it would require fashion retailers and manufacturers doing business in New York State with annual revenues of more than $ 100 million to “map their supply chains, disclose the environmental and social impact of their activities and set goals to remedy these effects.according to the memo from the sponsor of the bill.

The new law “tests the trend,” Kolsun said, in a good way. “The fashion industry is self-regulating and there is a lot of pressure to add more regulation.” Finally, he said the law would force companies to work harder on supply chain transparency and “hire a lot of people to run the app, but it’s still happening.”

INTA has 6,700 registrants this year from 130 countries, the organization said. While numbers fell from pre -pandemic gatherings – 11,500 intellectual property professionals attended the conference in 2019 – attendees seemed excited to continue in -person networking. INTA staff, known as director general Etienne Sanz de Acedo, planned the event “on a compressed schedule, to do in four months what we normally do in a year”. He also said the band is working hard to “bridge the gap between live and virtual”.

Floriane Codevelle, a lawyer at Parisian intellectual property firm Casalonga, has attended several seminars related to NFTs, an emerging legal area with opportunities and risks not yet considered by many brands.

He said the panelists recommended openly discussing NFTs in any coexistence or brand licensing agreement and creating mandatory guidelines for their use. “For example, you need to make sure that NFTs are available in markets that have a good reputation and are consistent with brand or owner IP values,” he said. “You also need to make sure that to the extent that a third party creates NFT, the brand retains all relevant intellectual property rights.”

Other topics include registering dot-nft and dot-bitcoin domain names to prevent web infringers, as well as applying for Class 9 trademark rights.

Sylvie Benoliel-Claux, founder of Benoliel Avocats in Paris and president of the French Association of Trademark and Design Law Practitioners, said she had long discussed INTA with the Portuguese lawyer on the “issue of originality” of copyright, to discuss decision of the European Court of Justice in the case of Cofemel c. G-Star Raw, which has joined the two fashion brands in a long-running dispute over the designs to be seen on clothing.

Regarding NFTs, Benoliel-Claux said the legal chatter is about the liberal use of trademarks by artists in the metaverse. “There’s talk about what rights holders can do in response to ensure the best possible protection of their brands, but also about artists expressing their creative freedom,” he said. APRAM is organizing a conference of NFTs in Paris on June 22, in collaboration with INTA.

Gian Paolo Di Santo, a partner at Pavia & Ansaldo in Milan who regularly works with luxury and fashion clients, said many INTA attendees were planning their international counterparts on both imports and fakes. products. .

The gray market, he said-where real products are sold outside of authorized channels, which damages a brand’s distribution network-is changing, which he blames on structural differences. in the retail market. In Italy, he said, time is running out to seek legal redress against an unauthorized seller, because judges consider inaction a sign of sanction.

Di Santo also said he noticed a more sophisticated form of trademark forgery, with offenders registering their own distinct trademarks, but imitating the clothing trade of premium brands with caution. so much that consumers do not easily recognize the originals.

“In Italy there are a lot of counterfeiting operations, not all of them are on the radar,” he said. “But the good thing about Italy is that we have a very effective injunction system, so if you have an urgent situation you can prevent things quickly. Then, to get damages, you have to prove- your case on merit.In addition to actual damages, brands may seek to recover the profits of an infringer under the Italian Industrial Property Code.

Anna Mikhailyuk and Elena Koliedina of Mikhailyuk, Sorokolat & Partners, an intellectual property company founded in 1992 with a head office in Kharkiv, Ukraine, described how most of the company’s 200 employees moved to Ivano -Frankivsk in the western part of the country to escape heavy shelling in the east.

“We have to accept the new reality and change our lives,” said Koliedina, who has 10 years of experience in enforcing intellectual property rights in the territories of the former Soviet Union. Work, he said, gave him “the power to live, stay optimistic and do my best to support my country, my economy, my family, etc. I spent three weeks under the bombing, working in away, sometimes inside [the] basement, sometimes on the third floor of my apartment.

Koliedina added that the Ukrainian Intellectual Property Institute, which handles patent and trademark registrations, is still going strong, and that he and his colleagues feel that by continuing to work, “we are fighting for our own place in intellectual property “.

Cynthia Martens, former WWD Milan reporter, works at The Nilson Law Group, PLLC in New York

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